Together with the product or service and the sales vector, the brand represents the heart of a successful business. Protecting it, like protecting the product itself, must therefore be taken seriously. There are many ways to protect your brand. I discuss how each method differs from the other, their specifics, and more in a series of articles dedicated to the topic of brand protection.
In this post, I discuss trademarks and domain names, and in particular why it’s a good idea not to rely on the domain name alone when it comes to properly protecting your brand.
An alternative to trademarks?
The short answer at the outset: „Not really“. It might seem that to protect your brand today, you only need to register a domain name. It’s certainly cheaper and easier. In a way, a domain name can serve as proof of use of the sign in question. However, it does not guarantee its holder any right to the sign as such and does not in itself constitute a legal basis for a claim against a third party. In other words, the holder of a domain name has the right to use the registered domain name in the course of its business (provided that it does not itself infringe the rights of third parties), but cannot, without more, prevent a third party from using the identical or similar sign contained in the registered domain name.
In any dispute, the complainant (the holder of the domain name) must prove that it was in fact the first to use the sign in question and that it is already established under such a sign to such an extent that there is a real risk of confusion between the signs at issue. If the domain name holder is able to prove this, then the opposing party has committed unfair competition and may be prohibited from further use of the sign in question. The domain name may serve as one of the means by which the complainant can prove that it is actually using the disputed sign in the course of its business.
However, if the applicant has, in addition to the domain name, also registered a trade mark, it no longer has to prove in any litigation against a third party that it is actually using the protected sign and that there is a risk of confusion on the part of the public. That is presumed, and it is the defendant, on the other hand, who must prove or persuade the court that the use of an identical or similar sign does not infringe the plaintiff’s trade mark. The applicant’s starting position is therefore clearly more advantageous if it has registered a trade mark in addition to the domain name.
The role of trademarks in domain name disputes
A trade mark also gives its owner a substantial advantage in so-called domain name disputes. When a third party registers a domain name that contains an identical or similar sign protected by a trademark, the owner of the domain name can effectively defend itself against such an action, either through litigation or out-of-court dispute resolution (ADR). Depending on the domain in question, the rules governing the dispute may differ, but the basic principles remain similar. As in the case of third party use of a mark, as mentioned above, the position of the complainant in a domain name dispute will also be stronger if it has an earlier trademark for the sign contained in the disputed domain name. The owner of the trade mark does not have to prove with difficulty that it has rights in the protected sign which is part of the disputed domain name registered by a third party.
Registering a trademark is therefore also in this case the surest way to protect the rights to your brand and to ensure the best possible starting position in a possible (domain) dispute. In view of the above, it is therefore strongly recommended to register a trademark and not to rely on the domain name alone for brand protection.
This is the second article in a series of posts on brand protection. You can read the first post on the nature of trademarks and their role in brand protection here. The third post in the series on scope of trademark’s protection can be found here.
